COSTA AND COMPANY PVT LTD Vs. UOI

JUDGEMENT

(1.) THE petitioner assails the order dated 05.09.2011 passed by the learned Intellectual Property Appellate Board (the Appellate Board) in MP No.171/2008 in ORA/105/2007/TM/DEL. By this order, the Appellate Board has allowed the respondent No.3s application to seek transfer of the rectification application preferred by it under Section 47 of the Trade Marks Act, 1999 (the Act) before the Registrar of Trade Marks, Mumbai, (the Registrar), to the Appellate Board. Consequently, the rectification application No.BOM-183681 filed by the respondent No. 3 before the Registrar has been transferred to the Appellate Board from the stage at which it then stood. The Appellate Board has further directed that the two matters, i.e. ORA/105/2007/TM/DEL (rectification application preferred by the petitioner under Section 57 of the Act before the Appellate Board), and the transferred rectification application of the respondent No. 3 shall be listed together at Circuit Bench sitting at Delhi.

(2.) THE factual background may first be narrated. The petitioner applied for registration of the mark ,,Costas in the year 1990, which was granted in 1997. The same pertained to Class 30. On the other hand, the respondent No. 3 applied for registration of the trademark ,,Costa in respect of the goods under class 30 and 42 in the year 2003, and the same was granted registration in the year 2006.

(3.) THE submission of learned counsel for the petitioner is that the Appellate Board has no statutory power or jurisdiction to transfer to itself the rectification application pending before the Registrar. It is argued that the impugned order denies the right of appeal, which would otherwise be available to the petitioner, in case the respondent No. 3 succeeds in its rectification application before the Registrar, as an appeal lies under Section 91 before the Appellate Board from the order of the Registrar. On this basis, the present petition has been preferred.